Take the Fifth

Designated for pulication

• Future Proof Brands, LLC v. Molson Coors Beverage Co., 20-50323, appeal from W.D. Tex.
  • Smith, J. (Higginbotham, Smith, Dennis), trademark infringement, intellectual property, preliminary injunction
  • Affirming district court’s denial of preliminary injunction sought by plaintiff, who sued defendant for trademark infringement of plaintiff’s “brizzy” brand of hard seltzer product by defendant’s “vizzy” brand of hard seltzer product.
  • The Court held that the district court did not err in finding plaintiff failed to show a likelihood of success on the merits of its trademark-infringement claim.
  • The Court first looked to the first element of an infringement claim, strength of the mark. On the spectrum of “(1) generic, (2) descriptive, (3) suggestive, (4) arbitrary, and (5) fanciful,” the Court held that “brizzy” was suggestive, rather than the district court’s finding that it was merely descriptive, because the word requires a consumer to make an assumption about the nature of the product based on associations with the words “fizzy” (connoting carbonation) and “dizzy” (connoting “the sensation a consumer gets after a few rounds (because of a high alcohol content)”). Although the Court disagreed with the district court about where the mark falls on the spectrum, it held there was no error in the ultimate finding that the mark was relatively weak because both descriptive and suggestive marks are on the weaker end of the spectrum. In addition, the Court looked to third-party use of a portion of the mark–the “izzy” portion of the word–and noted a number of other beverage products used a variant of that word; the Court also held that it was not necessary that those products be hard seltzers because “we do not confine our analysis of third-party usage to products of the exact type that the plaintiff sells.”
  • The Court then held that the district court did not err in finding that the similarity between the two marks was not an element that weighed in favor of injunction. The Court held that the district court appropriately looked to substantial differences in the packaging of the two brands and appropriately did not give great weight to the aural similarity of “brizzy” and “vizzy.” The Court recognized that distinctiveness of packaging was a strong indicator of whether consumers would confuse the origin of the competing products.
  • The Court held that the sixth element of an infringement claim–the defendant’s intent–was correctly weighed by the district court against injunction. The Court noted that the constructive knowledge of a senior mark is not sufficient to establish an intent to infringe, since that element required a showing of intent to benefit from the reputation of the plaintiff.
  • The Court then held that the district court did not err in finding the seventh element, likelihood of confusion of consumers, weighed against the injunction. While the Court held that the district court was incorrect in determining that the confusion by a wholesaler was not confusion of a “consumer,” it held that the district court was correct that, regardless, one instance of momentary confusion by one wholesaler was a “fleeting mix-up” rather than “actual confusion” because there was no evidence that even that one instance led to a changed purchase decision.

Unpublished

• Schwarzer v. Wainwright, 19-41011, appeal from S.D. Tex.
  • per curiam (Higginbotham, Jones, Costa), prisoner suit, timeliness
  • Holding appeal of prisoner suit in abeyance, and remanding for limited purpose of determining when prisoner put his Rule 59(e) motion in the prison mail system in order to determining if it was timely filed, thereby extending the time for appeal, or whether appeal was untimely.

• Carbajal-Betanco v. Barr, 19-60298, petition for review of BIA order
  • per curiam (Higginbotham, Jones, Costa), immigration
  • Denying petition for review of IJ’s decision affirming an asylum officer’s determination that petitioner lacked a reasonable fear of prosecution on return to El Salvador.

• Nikpay v. Barr, 19-60308, petition for review of BIA order
  • per curiam (Clement, Ho, Duncan), immigration
  • Denying petition for review of BIA decision affirming IJ’s decision to deny application for asylum, humanitarian asylum, and protection under the Convention Against Torture by immigrant from Afghanistan.

• U.S. v. Ramseur, 20-10283, appeal from N.D. Tex.
  • per curiam (Higginbotham, Jones, Costa), criminal, restitution
  • Affirming restitution award for tax crime.